Canada has announced that the anticipated changes to the Trademarks Act will finally be coming into force as of June 17, 2019. The changes are expected to simplify the domestic registration process and provide access to the international registration process administered by the World Intellectual Property Organization (WIPO).

Major Amendments

  1. The definition of a trademark will be expanded.

“Non-traditional” marks, such as scent, taste and texture, shall be proper subject matter for trademark applications. The Trademarks Office will have a new right to request evidence of distinctiveness in support of any application. Applications for non-traditional trademarks are likely to encounter this expanded examination.

  1. Goods and/or services to be grouped according to the Nice Classification.
  2. The WIPO-administered Madrid Protocol will be implemented.
  3. No requirement to provide information on use of the trademark in Canada or abroad when filing.
  4. Certified copies of foreign registrations will not be required.
  5. Divisional Applications will be available
  6. Letters of Protest may be filed against another party’s mark during examination
  7. Declarations of Use will not be required.

All pending trademark applications as at June 17, 2019 can simply register in Canada after surviving advertisement. No information or attestation as to use is required.

  1. Registration Term Shortened
    1. Pending applications registered before June 17, 2019 will receive a one-time 15-year registration term. Subsequent renewal terms will be for 10 years only.
    2. Pending applications that are registered after June 17, 2019 will receive a 10-year registration period with subsequent 10-year renewal periods.
  2. Renewal Term shortened
    1. For existing registrations expiring before June 17, 2019, a one-time further 15-year renewal term will be granted. Subsequent renewal terms will be only 10 years each.
    2. For existing registrations expiring before June 17, 2019, but for which renewal is carried out during the grace period after June 17, 2019, a further 15-year renewal term will be granted. Subsequent renewal terms will be 10 years.
    3. For existing registrations expiring after June 17, 2019, the renewal terms will be 10 years, whether the registrations are renewed before or after June 17, 2019.

Recommendations

  1. File multi-class applications before June 17, 2019 to take advantage of lower flat official fees of $250CAD for filing an application. As of June 17, 2019, official filing fees will be $330CAD for the first class and $100CAD for each additional class.
  2. Include the relevant Nice Class(es) when filing new applications and classify any existing applications/registrations voluntarily prior to June 17, 2019 to avoid delays in the future.
  3. Register marks, if possible, prior to June 17, 2019 to gain a 15-year renewal term. However, registering proposed use applications after June 17, 2019 may allow for broader registrations, albeit with a 10-year renewal term.
  4. Classify and renew multi-class registrations before June 17, 2019 to take advantage of flat official renewal fee of $350CAD per registration. Renewal fees on or after June 17, 2019 will be $400CAD for the first class and $125CAD for each additional class.

Further Amendments

Further amendments to the Trademarks Act have been announced to address the anticipated growth of “trolls” or “squatters” under the new trademark regime.

Contemplated amendments could require trademark owners who recently obtained registrations to provide evidence of Canadian use within the first three years post registration to sustain a trademark infringement action and/or a claim for depreciation of goodwill.

Grounds of opposition would be expanded to include “bad faith”. The Trademarks Opposition Board would also be permitted to grant confidentiality orders and subject its proceedings to case management. The amendments also contemplate cost consequences against the losing party.

The ability to file new evidence of appeal of decisions of the Trademarks Opposition Board to the Federal Court of Canada could also be limited.